What is a Trade Mark Opposition?
Once the UK Intellectual Property Office (UKIPO) has completed its examination of a trade mark application, the proposed registration is published in the online Trade Marks Journal. From this point, there is an initial two month period during which a third party can file an opposition to the registration.
An opposition can be based on one of two grounds:
- Absolute grounds – An opposition on absolute ground is where the trade mark is unsuitable for registration. This often occurs when the opponent notices that the trade mark is descriptive of the goods or services offered. Or, the trade mark is a generic term for the goods or services and should be available to all.
- Relative grounds – An opposition on relative grounds is where a trade mark registration is deemed by the opposition to conflict with a previously registered mark or right (even an unregistered one) owned by the opposing party.
A party may also file an opposition against the entirety of the application or only against specific goods and services covered by the application.
Before a formal trade mark opposition, the opponent can issue a ‘Notice of Threatened Opposition’. This informs the applicant that a formal opposition may be filed should the applicant proceed with their trade mark registration. This allows the applicant to reach out to the opponent to see if there is a way both parties can negotiate a compromise without needing to resort to legal action. A Notice of Threatened Opposition also extends the opposition period to three months.
Both parties may negotiate amendments to the application, such as altering the designated class of goods or services or withdrawing the contested part of the application entirely. Should this be unsuccessful, the opponent can file a ‘TM7 Notice of opposition and statement of ground’ and proceed with an official trade mark opposition.